NAT. RESEARCH DEVEL. CORP. v. Great Lakes Carbon Corp.

• Decision Date: 23 December 1975
• Docket Number: Civ. A. No. 4347.
• Citation: 410 F. Supp. 1108
• Parties: NATIONAL RESEARCH DEVELOPMENT CORPORATION, Plaintiff, v. GREAT LAKES CARBON CORPORATION, and Great Lakes Research Corporation, Defendants.
• Court: U.S. District Court — District of Delaware

410 F. Supp. 1108

NATIONAL RESEARCH DEVELOPMENT CORPORATION, Plaintiff, v. GREAT LAKES CARBON CORPORATION, and Great Lakes Research Corporation, Defendants.

Civ. A. No. 4347.

United States District Court, D. Delaware.

December 23, 1975.

COPYRIGHT MATERIAL OMITTED

Vincent A. Theisen and John G. Mulford of Theisen, Lank & Mulford, Wilmington, Del., for plaintiff; David E. Varner of Cushman, Darby & Cushman, Washington, D. C., of counsel.

Arthur G. Connolly, Sr., and Paul E. Crawford of Connolly, Bove & Lodge, Wilmington, Del., for defendants; Carl F. Peters, Elizabethon, Tenn., of counsel.

OPINION

MURRAY M. SCHWARTZ, District Judge.

This is an action for infringement of claims 1, 2, and 9¹ of United States Letter Patent No. 3,412,062. The patent (hereinafter referred to as the '062 patent) was issued November 19, 1968, pursuant to an application filed April 19, 1965 by William Johnson, Leslie Nathan Phillips, and William Watt.² National Research and Development Corporation ("NRDC") is the assignee of the patent and a British corporation. Defendant Great Lakes Research Corporation is a wholly owned subsidiary of Defendant Great Lakes Carbon Corporation (hereinafter referred to interchangeably as "Great Lakes"). Both defendants are Delaware corporations and residents of this District.

Jurisdiction is founded on 28 U.S.C. § 1338(a). Venue is properly placed in this District under 28 U.S.C. §§ 1391 and 1400(b).

Defendants, in their answer, denied infringement, raised a series of affirmative defenses challenging the scope and validity of the patent and its claims, and counterclaimed for appropriate declaratory relief. The case proceeded through discovery and two unsuccessful motions for summary judgment. Thereafter, the Court granted defendants' motion for a separate trial pursuant to Fed.R.Civ.P. 42(b) limited to the issues of infringement and alleged invalidity of the patent in suit for failure to comply with the provisions of 35 U.S.C. § 112.³ A trial without jury was held; this Opinion constitutes the Court's findings of fact and conclusions of law with respect to the issues presented and tried in accordance with Rule 52, Fed.R.Civ.P.

The patent in suit is entitled "Production of Carbon Fibres and Compositions Containing Said Fibres." According to the patent specification, carbon fibres are members of a class of non-metallic fibres which have application as a high strength and stiffening element in composite materials. The inventions claimed in the patent include a process for producing carbon fibres, the fibres produced thereby, and certain composite material comprising the fibres as elements thereof.

The continuous production process employed by defendant, which is alleged to infringe plaintiff's patent, consists of three primary steps: (1) The beginning raw material fiber (hereinafter referred to as a precursor fiber) is taken from a tow box and passed through a steam bath and stretched for purposes of reducing the denier⁴ of the fiber, (2) thereafter the stretched fiber is passed through a forced draft heated air furnace (hereinafter the furnace is referred to as an oxidizer) while under tension, and finally (3) the oxidized fiber is subjected to further heat treatment in a non-oxidizing atmosphere (hereinafter referred to as carbonization) at temperatures significantly above that employed in the oxidizer, after which the final product, now a carbon fiber, is taken up on rolls which are then sold to defendants' customers.

While on the facts of this case there is close interaction between infringement, indefiniteness, under 35 U.S.C. § 112, and claim interpretation, infringement and invalidity will be treated separately.⁵

I INFRINGEMENT

Claim 1

The only independent claim of the '062 patent is Claim 1, which sets forth "a method of making carbon fibers" comprising several steps. Claim 1, in full, reads as follows:

"1. A method of making carbon fibers having a Young's modulus parallel to the fiber axis of not less than 16 × 106 pounds per square inch comprising the steps of oxidizing an organic polymer fiber by simultaneously heating the fiber in an oxidizing atmosphere at a temperature of from about 200° C. to 250° C. for a time sufficient to permit substantially complete permeation of oxygen throughout the core of the fiber while the fiber is held under longitudinal tension, said tension being sufficient at least to limit shrinkage of the fibers during heating to not more than about 12% of the length of the fiber, and carbonizing the fiber by heating the oxidized fiber in a non-oxidizing atmosphere to a temperature of up to about at least 1000° C."

In its consideration of the alleged infringement of Claim 1, the Court proceeds in accordance with guidelines established by the Supreme Court:

"In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out and that is the end of it." Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 607, 70 S.Ct. 854, 855, 94 L.Ed. 1097 (1950).

Furthermore, a finding of infringement requires that each essential element recited in the claim be present in the accused device.

Claim 1 begins:

"A method of making carbon fibers having a Young's modulus⁶ parallel to the fiber axis of not less than 16 × 106 pounds per square inch⁷ . . .."

The Court finds this element of the Claim reads on the Great Lakes process.⁸

The Claim continued:

". . . comprising the steps of oxidizing an organic polymer fiber. . . ."

The Great Lakes process oxidizes Orlon Type 42 or 43, a type of organic polymer fiber known as polyacrylonitrile (PAN). This element of the Claim reads on the Great Lake process.⁹

The Claim continues:

". . . by simultaneously heating the fiber in an oxidizing atmosphere at a temperature of from about 200° to 250° C.¹⁰ . . .."

The Great Lakes plant has two manufacturing lines.¹¹ In the "pilot" line, the fiber is heated in an oxidizer having a uniform interior temperature of 235° C. The Claim element reads on the pilot line process. In the "production" line, the oxidizer has four successive interior zones of increasing temperatures, the last two of which operate at temperatures from 250° C. to 265° C. or occasionally 275° C.¹² The above element of the Claim reads on the production line process only if the phrase "from about 200° C. to 250° C." can be interpreted to include temperatures as high as 275° C. Plaintiff's expert witness testified that considering the kinetics of the physical and chemical reactions involved, the claimed range of temperature would be interpreted as approximate at the higher level.¹³ Defendants, in the post trial briefing and argument, have not seriously contended otherwise.

The temperature for the atmosphere in the oxidizer sets forth the operative range with minor departures not critical.¹⁴ In light of the evidence, I find the element as written reads on the temperatures found in the oxidizer of the Great Lakes "production" line.

Claim 1 continues:

". . . for a time sufficient to permit substantially complete permeation of oxygen throughout the core of the fiber. . . ."

Starting with the phrase "throughout the core of the fiber", the term "core" was defined by plaintiff's skilled in the art experts as:

". . . central region of the fiber, the region around the axis of the fiber, if it happens to be a circular fiber, but. . . ."

* * * * * *

". . . 10 percent of the cross-sectional area." (Morley T. pp. 349-50). ". . . oxygen has spread throughout the fiber, even including the central region of the fiber." (Uhlmann T., p. 623).

"I would consider the core as the complete fiber, everything except the outer surface." (Winer T., p. 181).

Plaintiff urges all of the foregoing definitions of "core" can be synthesized, are clear, and have the meaning attributed thereto by common everyday usage; i. e., the central region or portion of a given object. Plaintiff would have the Court find that "throughout the core of the fiber" means simply throughout the entire cross sectional area of the fiber.¹⁵

Defendants, without benefit of expert testimony by one skilled in the art¹⁶, would have the Court find that the term "core" refers to a phenomenon peculiar to certain types of PAN fiber, with special emphasis on Courtelle, and, in no event applicable to its precursor PAN Fiber, Orlon. In brief, Courtelle heated in air for two hours at 200° C. develops zones,¹⁷ the outer zone being oxidized, while the inner core is unoxidized PAN.¹⁸ In contrast, when heated in air, defendants' precursor fiber does not develop a zone structure and consequently no "core".¹⁹

In primary support of its theory of the meaning of "core", defendants, over the objection of plaintiff, relied upon the English non-party inventors' handwritten notebook of recorded experiments and observations to conclusively establish the derivation of "core" as found in the patent specification and Claim 1. It is concluded that the inventor's notebook and testimony based thereon is inadmissible.²⁰

Secondary support for defendants' theory is the use of "soft core" in the specification of the '062 patent²¹, combined with reference to the same phenomenon by the inventors in subsequent publications²² describing earlier work wherein they state Courtelle was used²³, and creation of a distinct core in Courtelle when run on defendants' process.²⁴

I, as fact-finder, have serious reservations about the correctness of the definition of core as asserted by plaintiff. One of plaintiff's expert witnesses, Donald R. Uhlmann, an M.I.T. professor with impeccable credentials, while adhering to plaintiff's definition of the word "core", conceded that use of the word in Claim 1, neither contributed (T-1389) nor taught anything to one skilled in the art (T-1388). On the other hand, being unable to consider the inventor's notebook²⁵...